by Dennis Crouch
AC Techs v. Amazon.com, Inc. (Fed. Cir. 2019)
This case focuses on AIA-Trial Procedure following SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018). In SAS, the Supreme Court held that the USPTO’s institution decision is binary — “either institute review or don’t.” If the USPTO institutes an IPR then the PTAB must issue a final written decision regarding each claim challenged in the petition. Prior to SAS, the USPTO commonly issued partial-institution orders — instituting the IPR on only a subset of challenged claims.
Here, Amazon’s petition was granted as to Grounds 1 and 2, but not Ground 3. At institution stage, the Board found Ground 3 redundant — in part because the claims challenged by Ground 3 were already challenged by Ground 1. Thus, we don’t have the same situation as SAS, but it is somewhat similar. An important bit of information for the case is that Ground 3 did not present new prior art, but only an argument based upon an alternative claim construction.
In its final written decision, the Board invalidated a number of claims, but sided with the patentee for claims 2, 4, and 6 — the same claims challenged by not-instituted Ground 3. On motion, the Board then issued a revised opinion considering Ground 3 and rejecting the remaining claims on that ground.
On appeal, the Federal Circuit confirmed that the Board had followed proper procedure — noting that “if the Board institutes an IPR, it must similarly address all grounds of unpatentability raised by the petitioner.” See BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205 (Fed. Cir. 2018) (“Post-SAS cases have held that it is appropriate to remand to the PTAB to consider non-instituted claims as well as non-instituted grounds.”).
The Federal Circuit also found no due process violation in the rehearing since the USPTO provided notice and allowed additional discovery and argument prior to considering Ground 3.